Can a geometric sign on eyewear be distinctive? No, says EUIPO

 

By decision of 19 February 2024 (R 514/2023), the Board of Appeal (BoA) of EUIPO confirmed the initial refusal to register a position trade mark for eyewear, consisting of a geometrical sign (an irregular polygon used as a rivet for fastening the hinges of eyeglasses). It is worth recalling a previous favourable decision of the BoA of EUIPO with regard to a position trade mark, consisting of a geometrical sign, for footwear (see The IPKat here). 

 

 

Background of the case

 

On 24 September 2019, Cubitts KX Limited (“the applicant”) filed the application no. 18128498 to register the following position trade mark in class 9 (eyewear).

 

 

 

On 10 January 2023 the examiner issued a decision of total refusal of the trade mark applied for pursuant to Article 7(1)(b) EUTMR. The decision was based on the following main findings:

 

(a) the products for which protection is sought are primarily aimed at the general public. The level of attention varies from average to consumer reasonably informed;

(b) the figurative elements of the sign are simple. Moreover, they would be perceived as having only a mere functional or aesthetic purpose rather than a function of indication of origin. Therefore, they are not able to convey any message that can be remembered by consumers and, consequently, will not be perceived by them as a trade mark.

  

Previously, the applicant had also filed the figurative trade mark application no. 17976258 for the same goods covered by the position mark.

 

 

Upholding the Examiner’s decision, the BoA found the applicant's figurative trade mark to be devoid of distinctiveness for the goods in Class 9 (R 1967/2019-1). The decision was not appealed by the applicant and had become final.

 

The decision

 

The BoA dismissed the appeal and confirmed the refusal of the application on the ground of lack of distinctiveness, while remitting the proceeding to the Examination Division for the evaluation of the subsidiary query of acquired distinctiveness through use.

  

The contested trade mark is not a mere figurative mark, but a position trade mark and must be assessed as such. A trade mark may be devoid of distinctive character as figurative mark but, when requested in one or more specific positions, it may acquire distinctiveness. Therefore, the position of the trade mark is relevant to the overall assessment.

  

As for the position mark showing four polygons instead of one, there is nothing unusual or memorable about these polygons and their placement on the products. It is irrelevant that the sign serves other functions besides that of an indication of origin, e.g. an aesthetic (decorative) function. However, the BoA considered that the contested trade mark in question does not serve (inherently) as an indication of origin. The position sign for which protection is sought will be perceived by the target audience (also to the extent that it has a high level of attention) and in relation to all contested products exclusively as a decoratively finished mechanism or rivet that connects to or covers the hinge that attaches the end piece or the front of the glasses to the arms.

  

The applicant also alleged that a survey for the perception of the relevant public, conducted in Germany and filed during the examination procedure, was dismissed in the contested decision without proper reasons.  The BoA preliminarily noted that the survey interviews were conducted between 21 October and 24 October 2021, while the filing date of the contested trade mark was 24 September 2019.  However, for the purposes of proving inherent distinctiveness, the survey presents various defects (as regards the queries posed in the interviews and evaluation of the answers) and cannot validly rebut the examiner's conclusion that the contested trade mark is devoid of distinctive character (in Germany or in the whole EU).

  

Lastly, regarding the social media posts submitted by the applicant, regardless of the territory and the time frame, even if this would justify that some consumers are able to identify the applicant or its competitors by means of, for example a polygon or 'I'-shaped rivets on the front of the frame,  the BoA concluded that, from this evidence, it cannot be inferred that this element, applied to products, is inherently distinctive for a significant part of the target audience in relation to the products in question.

 

Comment

 

The decision still leaves open the debate on the assessment of distinctive character of position trade marks consisting of geometric signs in different class of products, e.g. footwear and eyewear and confirms that a finding of distinctiveness may be indeed difficult to achieve.

 

The decision also highlights the issues related to the evaluation of consumers surveys as evidence to prove or help prove any assertion relating to the public’s perception, e.g. whether a sign is perceived as being used as a trade mark or the degree of (acquired) distinctiveness. A survey conducted in a manner that is not in accordance with standards of proper research will likely lead the relevant authority to regard its findings with scepticism, or to disregard the survey in its entirety. The CP12 Common Practice on Evidence in Trade Mark Appeal Proceedings points out that consumer surveys must be neutral and sufficiently representative for the parties to be able to use them effectively in the proceedings.

 

This decision confirms that, in any case, the results of a consumer survey cannot be the only decisive criterion in support of the conclusion on distinctive character They must therefore be complemented by other means of evidence, especially in support of the conclusion that distinctive character has been acquired through use (C-217/13).

 

  

Photo by Umberto Maria Galante